WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Applegate Directory Ltd. v. Interlution a/k/a Matthew Bessette
Case No. D2004-0181
1. The Parties
The Complainant is Applegate Directory Ltd., of Barnstaple, United Kingdom of Great Britain and Northern Ireland, represented by Moore, Hill & Westmoreland, P.A., United States of America.
The Respondent is Interlution a/k/a Matthew Bessette, of Pensacola, Florida, United States of America, represented by Law Offices of Stephen H. Sturgeon & Associates, PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <applegate.com> (the "Disputed Domain Name") is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2004. On March 10, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the Disputed Domain Name. On March 13, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response April 7, 2004. The Response was filed with the Center April 7, 2004, together with the Respondent's Panelist nominations for a three-member Panel.
On April 7, 2004, the Center requested the Complainant to provide its Panelist nominations by April 13, 2004. The Complainant filed its nominations on April 22, 2004, shortly after the Respondent had indicated to the Center that the Complainant had failed to submit its nominations by the requested date and that accordingly the Center should not accept the Complainant's late filing. From the case file, it appears that the Center's email to the Complainant of April 7, 2004, did not reach the Complainant's authorized representative and accordingly the Panel accepts the Complainant's late filing.
The Complainant filed a Submission of Supplemental Affidavit and Further Statement with the Center by email on April 14, 2004, and in hard copy on April 22, 2004. On April 22, 2004, the Respondent filed with the Center a request to file a Further Statement should the Panel allow the Complainant's Supplemental Affidavit and Further Statement.
The Center requested both parties to provide their Presiding Panelist ranking on May 3, 2004. The Center received the Respondent's Presiding Panelist ranking on May 7, 2004. On May 10, 2004, the Center requested the Complainant to file its Presiding Panelist ranking by the end of that day. The Complainant filed its Presiding Panelist ranking on May 10, 2004.
The Center appointed Alistair Payne, M. Scott Donahey and NAF panelist Gervaise Davis III as panelists in this matter on May 12, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Rule 12 of the Rules provides that only the Panel may request further submissions: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties." There is no provision in the Rules for a party to file an additional submission without leave of the Panel. Nevertheless, without receiving a request from the Panel or seeking leave from the Panel to file a further statement, Complainant submitted its Supplemental Affidavit and Further Statement.
The Panel has considered the Complainant's Supplemental Affidavit and Further Statement and it is admitted in part (see section 6A below). However, even with this part of the Complainant's Supplemental Affidavit and Further Statement, the Panel has found in favour of the Respondent and accordingly there is no need for the Respondent to provide any further filings.
4. Factual Background
The Complainant was formed in early 1996 to develop web design and directory services based on the newly emerging Internet. The Complainant is a business entity incorporated under the laws of the United Kingdom. The Applegate partnership was incorporated in the United Kingdom as Applegate Media Ltd on March 24, 1999, and as Applegate Directory Ltd on May 11, 2000.
On July 15, 1996, Applegate registered the domain name <apgate.com> and on February 6, 1998, it registered the domain name <applegate.co.uk>.
5. Parties' Contentions
1. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant has obtained legally protected use of the `Applegate' name under the laws of the United Kingdom. On September 3, 2001, the Complainant was granted a United Kingdom trademark for APPLEGATE.
By 1999, the Complainant's business had become widely known on the Internet with a circulation of 650,000 page impressions or hits per month. At that time, the Complainant was prominently listed in the leading search engines Altavista and Yahoo and any search for `Applegate' would have returned the Complainant's website and this continues to be the case in those search engines and newer engines such as Google.
2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Respondent has no legal rights or interests in using the `Applegate' name for its domain name, either in the United Kingdom or the United States of America.
3. The Disputed Domain Name was registered and is being used in bad faith
The Respondent has used the Disputed Domain Name in bad faith, intentionally attempting to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on the website.
The Respondent has engaged in a pattern of "cybersquatting" on other domain names without any legal right or interest therein and contrived in a manner substantially intended to create confusion with other legitimate enterprises, and for similar illegitimate or disreputable purposes or content linkage (see World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256).
In the summer of 1996, Applegate attempted to register the Disputed Domain Name but was unable to do so at that time as it was already registered by the Respondent. The Respondent did not reply to efforts to contact him at that time to discuss the matter.
Until late 1999, the Disputed Domain Name did not resolve to any active website. The Respondent did not start to actively use the Disputed Domain Name until the end of 1999 and subsequently, the Respondent's website has prominently featured various pornographic content links and has been developed in a manner that is detrimental to the Complainant's legitimate business use of the `Applegate' name. In April 2003, the Respondent substantially increased the number of periodic links to pornography on the opening page of its website. The Respondent's website that the Disputed Domain Name resolves to has no valid contact information, physical addresses nor, apparently, represents any business activities in its own right.
The Complainant's website currently has in excess of 5,000,000 page impressions or hits per month. The Respondent has therefore started to benefit from the popularity of the `Applegate' name. Access to the Respondent's site appears to rely almost entirely on traffic from people looking for the Complainant's products and appears to have fewer than 100,000 page impressions per month, the vast majority being in error while looking for the Complainant's website. This confusion has had various consequences for the Complainant, including lost orders, recruitment problems and a negative effect on its business image.
The Complainant has had legitimate plans since 2000 to expand its marketing and services to the North American market. These efforts have been seriously impeded by the Respondent's bad faith use of the Disputed Domain Name and its refusal to respond to enquiries. Among Internet users in the U.S. particularly who are routinely accustomed to using top level ".com" domains to locate the Complainant's product and evaluate its bonafides, the Respondent's bad faith use of these domains for such content creates severe negative associations for the Complainant's goodwill in the target market.
1. Applicability of the Policy
The Respondent submits that the present administrative proceeding is not one that the Policy was intended to deal with as there is no clear case of cybersquatting by the Respondent, and it cites a number of previous cases to support this submission.
2. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Respondent contends that the Complaint does not provide adequate proof, evidence or substantiation to prove that the Complainant has trademark rights for the following reasons:
· The Complainant Entity Does Not Have Any Trademark Rights
The Complainant in this dispute is Applegate Directory Ltd. The Trademark Registration Certificate which the Complainant has submitted as evidence shows registration of the APPLEGATE mark in the name of Applegate Media Limited - a separate legal entity from the Complainant.
· Any Possible Trademark Rights are in a Distant Country
Complainant does not have a trademark registration in the United States of America, where the Respondent is located. If the Complainant was utilizing the word extensively as an identifier of its products, it would be expected that a trademark registration application would be filed for trademark rights in the United States of America.
· No Allegation or Proof of Any Common Law Trademark Rights
In addition to the absence of any proof of a registered trademark, there is not adequate proof of any common law trademark rights.
· Different Goods and/or Services
The Respondent relies on the decision in the case of Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (WIPO January 31, 2001) which states:
"Because it cannot be said that Complainant has exclusive rights to this fairly short, non-fanciful name, Respondent may legitimately develop its own use of the name in an unrelated field. Cf. Goldline International, Inc. v. Gold Line, Case No. D2000-1151 (WIPO Jan. 4, 2001) (respondent could have legitimate interest in developing mark identical to complainant's where mark was weak and respondent operated in unrelated field); Shirmax Retail Ltd. v. CES Marketing, Inc., Case No. AF-0104 (eResolution Mar. 20, 2000) (registrant may more easily develop legitimate interest in single, short, common word)."
· Precedents have established that there is not confusion if any risks associated with any possible confusion will be quickly dispelled by a viewer's visitation to the site of the domain name.
· Applegate is a common word
The Complainant cannot claim exclusive rights to a common word. The term "APPLEGATE" is subject to substantial third party use unaffiliated with Complainant. A search on the Internet search engine Google.com for the word "APPLEGATE" yields innumerable third-party web pages.
3. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Complainant has also failed to sustain its burden of proving that Respondent did not have any legitimate interest in the Disputed Domain Name. The Complainant only makes some statements that do not relate to the issue of the Respondent's "legitimate interest in the domain name" for purposes of the Policy and that a Complainant's burden of proof on this issue is made clear in a number of previous cases decided under the Policy including Marbil Co. Incorporated "DBA" Insol v.Sangjun Choi, WIPO Case No. D2000-1275.
Notwithstanding the above, the Respondent contends that it does have legitimate interests in the Disputed Domain Name for the following reasons:
The Respondent has engaged in the "use of, or demonstrable preparations to use, the domain name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services". The Respondent was utilizing the Disputed Domain Name for the marketing of adult entertainment. The name `Applegate' is the name of one of the individuals who has been featured.
A Respondent's legitimate interest is not diminished because the website is not yet activated with the complete website at the URLs in question and it is well established that the mere intent to use a descriptive domain name for a related website constitutes use in connection with a bona fide offering of goods or services, pursuant to paragraph 4(c)(i) of the Policy.
The registration of a domain name incorporating merely a common word or term to use for a business establishes a Respondent's legitimate interest, and the Respondent cites a number of cases that it contends support this contention.
4. The Disputed Domain Name was registered and is being used in bad faith
The Complainant has failed to prove that the Disputed Domain was registered (and used) in bad faith, and therefore the Complaint must be denied. A close examination of the Complainant's filing does not provide adequate proof or evidence to support the allegation that the Respondent has acted in bad faith.
· Bad Faith At the Time of Registration
The Respondent contends that it is virtually impossible for the Respondent to have had bad faith at the time of the registration of the Disputed Domain Name as it registered the Disputed Domain Name in July 1996, the same year that the Complainant states that the Applegate Directory was formed.
The Complainant admits that the Applegate partnership was not recognized as a legal entity in the United Kingdom until it was incorporated with the name "Applegate Media Ltd." on March 24, 1999, and that a separate legal entity (Applegate Directory Ltd) was incorporated on May 11, 2000. There is no proof or indication of the extensiveness of the use of the term "Applegate Directory" prior to the Respondent's registration of the Disputed Domain Name. Accordingly, the Complainant has not proved that the Respondent had any knowledge of the existence of a small, obscure "business partnership" that may have been conducting some business during the period between "early 1996" and the date of the Respondent's registration of the Disputed Domain Name. Since the Respondent (located in the USA) did not have any knowledge of this small "business partnership" in the United Kingdom, it is not possible for Respondent to have registered the Disputed Domain Name in bad faith.
· Common Term
The Respondent also contends that bad faith cannot be established because the Complainant only has limited or non-existent rights with respect to a limited trademark in the generic word "APPLEGATE".
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name to the Complainant), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element of the Policy requires the Complainant to prove (a) that it has rights in a trademark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trademark or service mark.
The Disputed Domain Name is clearly identical to the APPLEGATE mark (excluding the generic ".com" suffix) and therefore the Complainant has to prove, for the purposes of this Policy, that it has trademark or service mark rights in the `APPLEGATE' mark in order to succeed with this element of the Policy. As a number of previous Panels have held, the Complainant may establish this element of the Policy by proving its rights by way of a registered mark or by its common law rights in the mark.
· Registered Trademark Rights
As the Respondent submits, the registration certificate provided by the Complainant in its evidence states that Applegate Media Ltd is the registered proprietor of the APPLEGATE trademark in the UK. The Complainant admits in its evidence that there are two separate entities, Applegate Media Ltd and Applegate Directory Ltd, and both are currently trading. The Complaint has been brought in the name of Applegate Directory Ltd and not Applegate Media Ltd, a separate legal entity, and the Complainant has not provided any evidence of any other registered trademarks that it owns.
The Complainant had the opportunity in its Supplemental Affidavit and Further Statement to provide evidence of its rights in the APPLEGATE trademark. In that filing, the Complainant contends that it has a legal and contractual right to enforce the APPLEGATE trademark by virtue of an exclusive licence to the registered mark, which is held under assignment of rights by Applegate Media Ltd. However, the Complainant does not provide any documentary evidence of this alleged right to enforce the trademark and the Panel finds no other evidence amongst the Complainant's filings that suggests that the Complainant entity may have registered rights in the APPLEGATE mark.
Accordingly, the Complainant has not proved that it has registered rights in the APPLEGATE mark for the purposes of the Policy.
· Common Law Rights
The Complainant does not provide sufficient evidence for the Panel to find that it has common law rights in the APPLEGATE mark for the purposes of the Policy. The Complainant contends that the Applegate partnership was formed in 1996, which was then incorporated in the United Kingdom initially in 1999, but does not provide any evidence either in its Complaint or its Additional Submission that it has established common law rights in the APPLEGATE trademark.
Accordingly, the Panel finds that the Complainant has failed to establish that it has rights in the APPLEGATE trademark for the purposes of the Policy and accordingly the Complaint fails.
Even if the Complainant had provided sufficient evidence that established that it has rights in the APPLEGATE trademark, the Complaint would fail for the reasons set out below.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant contends that the Applegate partnership was formed in early 1996 but admits that the Respondent had registered the Disputed Domain Name by the summer of that year. The Complainant contends that it contacted the Respondent at that time (without any supporting evidence as to the form or nature of that communication) but the Respondent failed to reply. The Respondent appears to have begun using the Disputed Domain Name in connection with an active website at the end of 1999, and the Complainant appears to have made no further effort to contact the Respondent until the filing of this Complaint in 2004, some 8 years after the initial registration by the Respondent, and approximately 4 and a half years after the Respondent's first active use of the Disputed Domain Name.
Further, there is some evidence to suggest that the Respondent, by virtue of its use of the Disputed Domain Name since 1999, has become commonly known by the Disputed Domain Name.
The Panel therefore finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
On the evidence, the Panel finds no bad faith registration and use of the Disputed Domain Name by the Respondent. The Respondent appears to have registered the Disputed Domain Name a few months after the Applegate directory was formed, and there is no evidence that suggests that the Respondent had even constructive knowledge of this Applegate partnership at the time of registration, nor is there any evidence that the partnership (which appears to have subsequently become the Complainant in part) had established any trademark rights in the APPLEGATE mark at that time which may have alerted the Respondent to the Complainant's predecessor.
Further, the Complainant has provided no evidence of the Respondent's alleged use of the Disputed Domain Name in bad faith. The fact that a domain name resolves to a pornographic website is not in and of itself bad faith use - the Complainant needs to provide other evidence to prove that the Disputed Domain Name is being used in bad faith and in this instance it has not done so.
Accordingly, the Panel finds that the Complainant has also failed to establish this element of the Policy.
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
Gervaise Davis III
Date: May 26, 2004